Date of
Judgment: October
17, 2006
Issuing
Authority:
Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial(Civin( �b>
Subject
Matter:
Patent(Inventions)
Main
text of the judgment (decision):
1. The appeal to the court of the
last resort is dismissed.
2. The appellant at the court of the last resort
shall bear the costs of the appeal to the court of the last resort.
Reasons:
I. Outline
of the case
1. In this case, the appellee at the court of
the last resort seeks, from the appellant at the court of the last resort,
payment of reasonable value prescribed in Article 35, para.3 of the Patent Act
(prior to the revision by Act No. 79 of 2004; the same shall apply hereinafter)
for having assigned the right to obtain a patent in a foreign country together
with the right to obtain a patent in Japan with respect to the inventions made
by the appellee as the appellant's employee.
2. The outline of the facts legally determined
by the court of the second instance is as follows:
(1) The appellant is a general electric
appliance manufacturer engaged in the development, manufacture, sale, etc., of
electric products. During the period from November 1969 to November 1996, the
appellee was employed by the appellant and worked as the chief researcher at
the appellant's central research laboratory.
(2) While working as the appellant's employee,
the appellee, in cooperation with other employees, made the inventions for
which Patents 1 to 3 were later granted, as indicated in the list of patents
attached to the judgment of the first instance (these inventions shall
hereinafter be respectively referred to with their numbers in the list, as
"Invention 1," "Invention 2," and "Invention 3",
and collectively referred to as the "Inventions"). The Inventions all
relate to devices and methods for reading and writing data on storage media
(optical disc) by using laser beams. The Inventions by nature fall under the
scope of the appellant's business, and they were achieved by acts categorized
as the appellee's present or past duty to be performed for the appellant;
therefore, they fall under the scope of employee invention prescribed in
Article 35, para.1 of the Patent Act.
(3) The appellee concluded contracts with the
appellant for assigning to the appellant the right to obtain a patent
(including the right to obtain a patent in a foreign country) for the
Inventions. The date of the contract was: for Invention 1, September 13, 1977;
for Invention 2, January 20, 1973; for Invention 3, December 26, 1974 (these
contracts shall hereinafter be collectively referred to as the "Assignment
Contracts").
(4) With respect to the Inventions, in Japan,
the appellant filed patent applications, which resulted in the registration of
establishment of patents, and obtained patent rights. The appellant also
obtained patent rights for Invention 1 in the United States, Canada, the United
Kingdom, France, and the Netherlands, and for Invention 2 and Invention 3 in
the United States, Germany, the United Kingdom, France, and the Netherlands.
(5) At the time of conclusion of the Assignment
Contracts, the appellant had established the "Regulations for Honoring for
Inventions, Devices, etc.," which provides that the appellant shall award
its employee who has made an invention a certain amount of prize money when a
patent application is filed and the establishment of a patent right is
registered with respect to the employee's invention, and shall also award such
employee prize money according to the performance of the invention where the
invention brings about remarkable results by being worked by the employer. The
appellant further established, by June 1991, the "Rules for Handling
Inventions, Devices, etc.," "Regulations on Compensation for
Inventions, Devices, etc.," and "Standards for Compensation for
Inventions, Devices, etc." Under these rules and regulations, the
appellant shall pay its employee who has made an invention a certain amount of
compensation as calculated under the specific standards on the following
occasions: a patent application is filed or the establishment of a patent right
is registered in Japan or a foreign country with respect to the employee's
invention; the invention is found to have contributed to the appellant's
business performance with its remarkable results through in-house working; or
the appellant receives royalties for licensing the invention to a third party
(all rules and regulations established by the appellant as mentioned above
shall hereinafter be collectively referred to as the "Regulations").
(6) The appellant concluded contracts with
several corporations for licensing the Inventions, for which patent
applications were filed or establishment of patent rights were registered in
Japan and foreign countries, and obtained profits from license royalties.
(7) In accordance with the Regulations, the
appellant paid the appellee a value for the assignment of the right to obtain a
patent for each of the Inventions, namely, 2,318,000 yen in total for Invention
1, 51,400 yen for Invention 2, and 10,700 yen for Invention 3, in the form of
prize money or compensation.
3. The court of the second instance, by
determining the amount of reasonable value claimable by the appellee from the
appellant for the assignment of the right to obtain a patent for the Inventions
(while deducing the amount already paid under the Regulations) to be
162,846,300 yen in total for Invention 1, 131,750 yen in total for Invention 2,
and 25,666 yen in total for Invention 3, upheld the appellee's claim to the
extent to seek payment of 163,003,716 yen in total, on the following grounds.
(1) The determination of the amount of value for
the assignment of the right to obtain a patent under the Assignment Contracts
involves international aspects in that the subject matter of the assignment is
a right to obtain a patent in Japan and in a foreign country, and therefore it
is necessary to decide which country's law is to govern. The Assignment
Contracts were concluded in Japan between the appellant, a Japanese
corporation, and the appellee, a Japanese national who resided in Japan and
worked as the appellant's employee, with respect to the inventions made by the
appellee as the appellant's employee. Since it can be presumed, based on the
above facts, that the appellant and the appellee have reached an implicit
agreement that the law of Japan shall govern the validity and effect of the
Assignment Contracts, pursuant to Article 7, para.1 of the Act on Application of
Laws in General, the governing law for the Assignment Contracts, including the
issue of determining the amount of value for the assignment of the right to
obtain a patent in a foreign country, shall be the law of Japan.
(2) The "right to obtain a patent"
prescribed in Article 35, para.3 of the Patent Act means not only the right to
obtain a patent in Japan but also the right to obtain a patent in a foreign
country. Therefore, the appellee may also request the appellant to pay a
reasonable value, as calculated in accordance with the standards set forth in
para.4 under the same Article based on para.3 of the same Article, with respect
to the right to obtain a patent in a foreign country.
II. Concerning Reason III for petition for
acceptance of appeal to the court of the last resort argued by the appeal
counsel, SUEYOSHI Wataru, et al.
1. The issues concerning the value for the
assignment of the right to obtain a patent, such as whether or not the assignor
of the right to obtain a patent in a foreign country can request payment of its
value from the assignee and what the amount of such value is, can be understood
as an issue of what the claim and the obligation held by each party to the
assignment is, and this issue, in turn, can be construed to be a question of
the effect of the contract (or any other juristic act with in-personam effect)
made by parties, which gives cause for the assignment. Consequently, it is
appropriate to construe that, pursuant to Article 7, para.1 of the Act on
Application of Laws in General, the governing law should be determined, first
of all, by the intention of the parties.
Here, it should be noted that the issue
concerning how a right to obtain a patent, which is the subject matter of the
assignment, is treated in foreign countries and what the effect of such right
is in foreign countries, should be considered separately from the issue
concerning the cause of the assignment between the parties. In light of the
principle of territoriality for a patent right, it is appropriate to construe
that the governing law for issues concerning the treatment and effect in a
foreign country of right to obtain a patent should be the law of the country
where a patent right is to be registered based on the right to obtain a patent.
2. In this case, since the appellant and the
appellee reached an implicit agreement that the law of Japan shall govern the
validity and effect of the Assignment Contracts, the issues concerning the
value for the assignment of the right to obtain a patent under the Assignment
Contracts, including whether or not the appellee can also request the appellant
to pay a value for the assignment of the right to obtain a patent in a foreign
country, should be governed by the law of Japan.
The determination of the court of the second instance
that goes along with this reasoning can be affirmed as justifiable. The
appellant's argument cannot be accepted.
III. Concerning Reason IV for petition for
acceptance of appeal to the court of the last resort argued by the appeal
counsel, SUEYOSHI Wataru, et al.
1. It is obvious that the Patent Act of Japan
does not directly govern a foreign patent or a "right to obtain a
patent" in a foreign country (See Article 4bis of the Paris Convention for
the Protection of Industrial Property of March 20, 1883, as revised at Brussels
on December 14, 1900, at Washington on June 2, 1911, at The Hague on November
6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at
Stockholm on July 14, 1967). Therefore, the "right to obtain a patent"
as set forth in Article 35, para.1 and para.2 of the Patent Act should
inevitably be construed to mean the right to obtain a patent in Japan, and it
is difficult to construe the term "the right to obtain a patent,"
from its language, to mean the right to obtain a patent in a foreign country as
well as in Japan only when it appears in para.3 of the same Article. For this
reason, it should be concluded that the provisions of Article 35, para.3 and
para.4 cannot be directly applied to the claim for a value for the assignment
of the right to obtain a patent in a foreign country.
However, regarding the provisions of Article 35,
para.3 and para.4, it is appropriate to construe that, based on a recognition
that, when disposing the exclusive right to exploit the employee's invention,
it is difficult for the Employee, etc. who has made an invention to make a deal
with the Employer, etc. on equal footing because the invention has been made
based on the employment relationship, these provisions aim to protect the
Employee, etc. who has made the invention by enabling him/her to secure a
certain amount of money as calculated under the standards set forth in para.4
of the same Article, from the profit that is objectively expected to be
received by the Employer, etc. who has acquired the right through exclusive
working of the invention, thereby achieving the purpose of the Patent Act as a
whole, i.e. encouraging inventions and contributing to the development of
industry. On the other hand, the Employee, etc. may experience difficulty
making a deal with the Employer, etc., on equal footing regarding the transfer
of the right to obtain a patent from the Employee, etc. who has made the
invention to the Employer, etc., even when the subject matter of the deal is a
right to obtain a patent in a foreign country. Although the right to obtain a
patent can be deemed to exist separately in individual countries, the invention
from which such right arises is one and the same achievement in technical
creation and was achieved in one and the same employment relationship.
Therefore, it can be said as a social fact that rights to obtain a patent in
foreign countries for such invention substantially arise from only one
invention. In addition, at the time of transfer of the right to obtain a patent
from the Employee, etc. who has made the invention to the Employer, etc., there
are usually many issues yet to be determined, e.g. in which country a patent
application should be filed, whether or not the invention should be kept as
secret know-how rather than disclosed in a patent application, and whether or
not there is a possibility to obtain a patent for the invention, and for this
reason, it is often the case that the right to obtain a patent in a foreign
country is transferred together with the right to obtain a patent in Japan.
Although the right to obtain a patent in a foreign country may not always be
deemed to have the same concept as the right to obtain a patent in Japan, it
can be construed that even in such case, the parties generally intend to handle
all legal relationships regarding the employee's invention between the
Employee, etc. who has made the invention and the Employer, etc. in an
integrated manner, by also vesting the Employer, etc. with the right to obtain
a patent in a foreign country. It follows that depending on the circumstances,
the purport of the provisions of Article 35, para.3 and para.4 should be
applied to the right to obtain a patent in a foreign country.
Consequently, where the Employee, etc. has
assigned to the Employer, etc. the right to obtain a patent in a foreign
country for the employee's invention as set forth in Article 35, para.1 of the
Patent Act, it is appropriate to construe that the provisions of para.3 and
para.4 of the same Article shall apply analogically to the claim for a value
for the assignment of the right to obtain a patent in a foreign country.
2. In this case, the appellee, based on the
employment relationship with the appellant, made the Inventions that fall under
the scope of employee invention prescribed in Article 35, para.1 of the Patent
Act, and assigned to the appellant the right to obtain a patent for the
Inventions in foreign countries including the United States, the United
Kingdom, France, and the Netherlands, together with the right to obtain a
patent in Japan. Consequently, the provisions of para.3 and para.4 of the same
Article shall apply analogically to the claim for a value for the assignment of
the right to obtain a patent in these countries, and therefore the appellee may
also request the appellant to pay a reasonable value, as calculated in
accordance with the standards set forth in para.4 of the same Article under
para.3 of the same Article, also with respect to the right to obtain a patent
in these countries.
The determination of the court of the second
instance on this point of issue is justifiable as the conclusion. The
appellant's argument cannot be accepted.
Therefore, the judgment has been rendered in the
form of the main text by the unanimous consent of the Justices.
(This translation is
provisional and subject to revision.)